Friday, May 18, 2018

TTAB Shuts Down NJ Turnpike Authority's 2(d) Opposition to JERSEY BOARDWALK PIZZA logo

The Board dismissed an opposition to registration of the mark shown below right for "restaurant services," finding that the New Jersey Turnpike Authority failed to prove likelihood of confusion with its registered mark shown below left, for highway maintenance services and information services, and its common law mark shown below center for those same services and for "service areas along the Garden State Parkway that include restaurants, many of which feature pizza." New Jersey Turnpike Authority v. Jersey Boardwalk Franchising Co., Opposition No. 91219067and Cancellation No. 92059657 (May 15, 2008) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Priority: Plaintiff NJTA established priority as to its highway maintenance and information services, but it failed to prove any rights in its marks for restaurant services. NJTA merely acts as a landlord for various restaurant facilities - such as Burger King and Pizza Hut - located at its service areas. In fact, its marks are not even displayed at or near the service areas.

The only item of evidence showing NJTA's use of its logo comprised a discount coupon for an Extra Value Meal that was apparently distributed in 1996, but there was no evidence as to how many were distributed. This sole piece of evidence was insufficient to establish common law rights as to restaurant services.

Strength of the Mark: NJTA contended that its mark is famous. The Board found the mark to enjoy "some degree of renown" in view of length of use, revenue figures, media coverage, and third party infringements and successful enforcement efforts. The Board concluded that the marks is "reasonably strong for highway management and maintenance and travel information services."

The Marks: Because of the strong visual resemblance between the marks, the Board found the commercial impressions of the marks to be "fairly similar," and the marks as in their entireties to be "similar."

The Services: There was no evidence that consumers would expect restaurant services and highway maintenance services to emanate from the same source.

Trade Channels: The same travelers who encounter NJTA's road maintenance and management services, or travel information services, also stop and eat at restaurants. And so there is at least a partial overlap in channels of trade and classes of consumers.

Bad Faith: Pointing to the 13th du Pont factor, plaintiff claimed that defendant chose the applied-for mark in bad faith. The Board, however, found no bad faith in defendant's creation of a New Jersey-themed motif for its restaurants, or from submission of an application to register after receiving a cease-and-desist letter, because (as defendant responded), there is no likelihood of confusion.

Conclusion: The Board concluded that source confusion is unlikely, and it dismissed NJTA's Section 2(d) claim.

Counterclaims: Defendant's two counterclaims, based primarily on its interpretation of New Jersey state law, were meritless. Its challenge to NJTA's ownership of the registration was barred by Section 14 of the Trademark Act, since registrations that are more than five years old may be challenged only on certain enumerated grounds, and ownership is not one of them. [Thankfully, the Board did not refer to the registration as "incontestable" - ed.].

Read comments and post your comment here.

TTABlog comment: In a cancellation proceeding consolidated with the opposition, defendant conceded that it discontinued use of an earlier version of its pizza logo mark with intent not to resume use, and so the Board granted NJTA's petition for cancellation on the ground of abandonment.

BTW: What is stopping defendant from opening a pizza restaurant just off a NJ Turnpike exit? Would consumers think it was affiliated with or sponsored by the Turnpike Authority? I suspect so.

Text Copyright John L. Welch 2018.


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